How to Cancel a Trade Mark
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Written on 12
Collectively the reference for the cessation of trade
mark rights is "cancellation".
A trade mark can be cancelled in 4 ways
1. Expiry. 2. Surrender. 3. Revocation. 4.
Declaration of invalidity.
Let us take a look at invalidity.
A trade mark may at any stage be invalidated if it
fails to tick the boxes on absolute grounds as referred to
in section 3 of the TMA and Article 7 of the CTM Regulation.
In short it should never have been registered in the first
place, and it cannot argue that it has acquired distinctive
character through use for the relevant goods or services (section
47(1), TMA and Article 52(1)(a), CTM Regulation).
• Francis Geoffrey Bignell (trading as Just
Employment (a firm)) v Just Employment Law Limited,  EWHC 2203
(Ch), in which the High Court upheld a counterclaim and that
JUST EMPLOYMENT lacked inherent distinctiveness and had failed to
• Lego Juris A/S v OHIM and MEGA Brands, Inc., Case
C-48/09 P, in which the ECJ followed the Philips case so as to hold
that a trade mark consisting of the shape of a Lego brick was invalid
under Article 7(1)(e)(ii).
• Starbucks (HK) Ltd and others v British Sky
Broadcasting Group plc and others  EWCA Civ 1465, in which the
Court of Appeal held that the signs NOW and NOWTV.com were invalid in
respect of telecommunication services because the word "now" would be
understood by the average consumer as a description of a characteristic
of the service, namely its instant nature.
Written by Michael Coyle
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
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Article Published/Sorted/Amended on Scopulus 2014-04-23 14:13:39 in Legal Articles